Appeal No. 2006-0251 Page 6
Application No. 10/017,697
masked liquid pharmaceutical composition. Compare, appellants’ disclosure
(specification, page 4), “[i]n the present invention, the normally bitter drug is
dissolved or dispersed in an aqueous taste masking excipient base comprising a
polyvinyl pyrrolidone and/or copolyvidone, and a high MW polyethylene glycol.
The taste masked liquid composition has substantially reduced bitter taste and
aftertaste.” According to the examiner (Answer, page 10), “[i]f polyethylene
glycol and polyvinylpyrrolidone are taste-masking agents in the instant case, the
polyethylene glycol and polyvinylpyrrolidone will also mask the taste of the bitter
or unpleasant tasting drug [in White].”
Based on the foregoing analysis, we find the examiner provided the
evidence necessary to establish a prima facie case of anticipation based on
inherency. Accordingly, the burden shifts to appellants to “prove that the subject
matter shown to be in the prior art does not possess the characteristic relied on.”
In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 229 (CCPA 1971).
Accord In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980),
quoted with approval in In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966
(Fed.Cir.1985); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977); In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566 (1971).
According to appellants (Brief, page 6), a tri-ester is an essential
component of White’s composition. In this regard, appellants point out (id.) that
tri-esters have a bitter taste. Accord White, column 3, lines 22-23, “[t]ri-esters
are generally clear, viscous liquids with a bitter taste and low toxicity.” Thus,
appellants assert (Brief, page 6), “the compositions disclosed by White contain
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007